Ex Parte Scheller et al

Patent Trial and Appeal Board

Mar 29, 2016

12846382 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/846,382 07/29/2010
16464 7590 03/29/2016
Evans & Dixon, LLC
Metropolitan Square
211 N. Broadway, Suite 2500
St. Louis, MO 63102
FIRST NAMED INVENTOR
Gregg D. Scheller
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
10451-14 1869
EXAMINER
HENDERSON, RY ANN
ART UNIT PAPER NUMBER
3779
MAILDATE DELIVERY MODE
03/29/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGG D. SCHELLER and MICHAEL D. AULD
Appeal2014-003299
Application 12/846,382
Technology Center 3700
Before LYNNE H. BROWNE, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gregg D. Scheller and Michael D. Auld (Appellants) 1 appeal under 35
U.S.C. § 134(a) from the Examiner's decision to reject claims 1 and 15-33.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Synergetics Inc.
Appeal Br. 2.
Appeal2014-003299
Application 12/846,382
THE CLAIMED SUBJECT MATTER
Claims 1, 21, and 26 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A surgical instrument handle comprising:
an elongate rod having a center axis that defines mutually
perpendicular axial and radial directions, the rod having a length
with axially opposite proximal and distal ends;
a ring mounted on the rod adjacent the rod distal end for
axially reciprocating sliding movement of the ring over the rod
toward and away from the rod end;
a forward grip member connected to the rod proximal end,
the forward grip member having a plurality of resilient arms that
extend axially from the rod proximal end along the rod to distal
ends of the arms that are circumferentially arranged around and
in sliding engagement with the ring whereby manual movement
of the arm distal ends radially inwardly moves the ring axially
toward the rod distal end and movement of the ring axially away
from the rod distal end moves the arm distal ends radially
outwardly.
THE REJECTIONS
Claims 1and15-33 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Dodge (US 2006/0089661 Al; pub. Apr. 27, 2006).
Claims 1and15-33 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Etter (US 2001/0056286 Al; pub. Dec. 27, 2001).
OPINION
Claims 1and15-33-Anticipation by Dodge
Independent Claim 1
Regarding independent claim 1, the Examiner found, inter alia, that
Dodge's elongate handle 12 corresponds to the claimed elongate rod and that
Dodge's slide ring 20 corresponds to the claimed "ring mounted on the rod
2
Appeal2014-003299
Application 12/846,382
adjacent the rod distal end." Final Act. 2-3 (citing Dodge if 20, Figs. 3A,
3B). The Examiner further found that end section 14-1 of actuator member
14 corresponds to the claimed forward grip member and is "connected to the
rod proximal end," as claimed. Id. at 3 (citing Dodge, Figs. 1, 3A, 3B)
(emphasis added).
Appellants argue, inter alia, that Dodge does not disclose a forward
grip member "connected to" a rod, but instead shows that end section 14-1
of actuator member 14 does not contact handle 12. Appeal Br. 6 (citing
Dodge, Figs. 3A, 3B). Appellants submit that Dodge describes actuator
member 14 as sized to be "sleeved over" handle 12, and more particularly,
"removably sleeved over the handle 12 (and thus []not necessarily
permanently fixed thereto)." Id. (citing Dodge iii! 16, 22); see also Reply Br.
2.
The Examiner responds that the claim language "connected to" does
not require that "two components are fixed to one another," but may be
broadly interpreted to mean "two components contacting one another." Ans.
13. The Examiner further responds that end section 14-1 of Dodge's
actuator member 14 would contact handle 12 because there is no structural
feature preventing the contact from occurring. Id. The Examiner determines
that Dodge's term "sleeved" implies close contact. Ans. 13. The Examiner
also reasons that the gap depicted between end section 14-1 and handle 12 in
Figures 3A and 3B of Dodge is "to show that forward grip member can
easily slide over the rod, but in use [end section 14-1] would comprise an
inner diameter, primarily of a semi-elastic material, similar to an outer
diameter of [handle 12] thereby maintaining [actuator 14] on [handle 12] and
3
Appeal2014-003299
Application 12/846,382
requiring the physician to only hold [actuator 14] to operate the instrument."
Id. at 13-14.
During patent examination, claims are to be given their broadest
reasonable interpretation consistent with the specification, with claim
language being read in light of the specification as it would be interpreted by
one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). An ordinary definition of the claim term
"connected" is joined) fastened) or linked together. See vVEBSTER'S THIRD
NEW lNT'L DICTIONARY 480 (1993). \Ve agree with the Exarniner's
finding that Dodge's actuator mernber 14 is joined to, and thus, connected
to, handle 12. However; Dodge describes this connection as being made by
the seating of nibs 14-3 of actuator fingers 14-2 within V-shaped channel 22
defined by actuation flange 18 and slide ring 20 of handle 12, at the distal
rather than proximal end of handle 12. See Dodge ~if 15, 17. Claim 1
recites "a forward grip member connected to the rod proximal end," and
thus, the connection between Dodge's actuator member 14 and handle 12' s
distal end does not rneet this limitation of clahn 1. Appeal Br. 12 (Claims
App.) (emphasis added). Further, we do not agree with the Examiner that
"close contact'' necessarily means "joined to" or that such contact alone
means that Dodge; s actuator member 14 is connected or joined to handle
12's distal end. Further, we determine that the Examiner's findings with
respect to contact between the proximal end of actuator member 14 and
handle 12 are speculative, as the Examiner has not provided support for
these findings in Dodge.
4
Appeal2014-003299
Application 12/846,382
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and claims 15----20 depending therefrom, as anticipated
by Dodge.
Independent claim 21
The Examiner found, inter alia, that the bore within the distal end of
Dodge's handle 12 (or rod) corresponds to the claimed slot. Final Act. 3
(see Dodge, Fig. 2 (bore depicted at reference numeral 26 at terminal end of
handle 12)). Appellants argue that "[a] common definition of the word 'slot'
is a narrow, elongated depression, groove, notch, slit, or aperture, .... "
Appeal Br. 9 (citing Dictionary.com). Appellants submit that "the
interpretation of [Dodge's] circular opening ... as 'a narrow opening'
ignores the meaning of the word 'narrow."' Reply Br. 7. In response, the
Examiner agrees that an ordinary definition of the claim term "slot" is "a
narrow opening or groove," but concludes that Dodge's "circular opening" is
"a narrow opening." Ans. 15 (citing Merriam Webster's online dictionary).
We are persuaded by Appellants' argument that the identified circular
opening is not a slot, because a circle does not have any portion that can be
described as narrow or elongated; instead, a circle necessarily has a perfectly
round shape. Accordingly, we do not sustain the Examiner's rejection of
independent claim 21, and claims 22-25 depending therefrom, as anticipated
by Dodge.
Independent claim 26
The Examiner found, inter alia, that Dodge's elongate handle 12
corresponds to the claimed elongate rod and that actuator member 14
corresponds to the claimed forward grip member "mounted to the rod," as
claimed. Final Act. 4--5 (citing Dodge, Figs. 3A, 3B). The Examiner further
5
Appeal2014-003299
Application 12/846,382
found that the distal ends of Dodge's resilient arms 14-2 are operatively
associated with ring 20. Id. at 5 (citing Dodge i-f 20, Figs. 3A, 3B). The
Examiner determined that nibs 14-3 engage ring 20 and the term "distal"
means "location away from the body of the user." Ans. 14.
First, Appellants argue that Dodge does not disclose a forward grip
member "mounted on a rod," but instead shows that end section 14-1 of
actuator member 14 does not contact handle 12. Appeal Br. 6 (citing Dodge,
Figs. 3A, 3B); see also Reply Br. 2. We are not persuaded by Appellants'
argument. An ordinary meaning of the claim term "mounted on," in light of
Appellants' Specification, is "to attach to a support or assemble for use."
See \VEBSTER'S THIRD NEW INT'L DICTIONARY 1477 (1993). As
discussed supra, Dodge describes and depicts actuator member 14
assembled for use on handle 12, which meets the limitation, as recited in
claim 26, of "a forward grip member mounted on the rod." Appeal Br. 16
(Claims App.).
Second, regarding the claim limitation requiring the forward grip
member to have "resilient arms that extend along the rod to distal ends of the
arms that are operatively associated with the ring," Appellants submit that
"distal end" means "the last part or extremity situated away from the point of
origin or attachment." Appeal Br. 7. Appellants argue that Dodge expressly
discloses that distal ends 14-2a "extend distally beyond the slide ring 20
(and hence also distally beyond the nibs 14-3 thereof)." Id. at 8 (citing
Dodge i-f 18). Appellants conclude that Dodge's nibs 14-3 engage ring 20
"at intermediate positions on the fingers 14-2 and not at distal ends of the
fingers." Id.; see also Reply Br. 5---6. Appellants further argue that the
Examiner's finding that nibs 14-3 are at the distal ends of the fingers is
6
Appeal2014-003299
Application 12/846,382
"inconsistent with the meaning of the phrase 'distal ends' as used in the
[Specification and claims]." Reply Br. 5.
Notwithstanding the disclosure in paragraph 18 of Dodge, we are not
persuaded by Appellants' argument, which too narrowly defines the claim
term "distal end." The Specification does not assign a special meaning to
the claim term "distal," but generally refers to forward grip member 82 as
having two ends: proximal end 88 and distal end 92. Spec. 4: 12-13, Figs.
1, 2. Distal end 92 is also used to describe the distal end of arms 102. See,
e.g., Spec. 4:22-24, Figs. 1, 2. The Specification does not describe an
intermediate portion along arms 102, nor does claim 26 require the distal end
to be interpreted, as for example, as a distal end surface. Therefore, we are
not apprised of error in the Examiner's finding that the distal ends (as
opposed to the proximal ends) of Dodge's resilient arms 14-2 (and in
particular, nibs 14-3) are operatively associated with ring 20.
Accordingly, we sustain the Examiner's rejection of independent
claim 26. Appellants chose not to present separate arguments for the
patentability of claims 27-33 depending from independent claim 26, and
therefore, we also sustain the Examiner's rejection of dependent claims 27-
33.
Claims 1and15-33-Anticipation by Etter
Regarding independent claims 1, 21, and 26, the Examiner found,
inter alia, that Etter' s slide piece 42 corresponds to the claimed "ring
mounted on the rod adjacent the rod distal end for axially reciprocating
sliding movement of the ring over the rod toward and away from the rod
distal end." Final Act. 9 (citing Etter i-fi-153, 54). Appellants submit that the
claim term ring "is commonly defined as a typically circular band of metal
7
Appeal2014-003299
Application 12/846,382
or other durable material." Appeal Br. 9 (citing Dictionary.com).
Appellants argue that Etter' s slide piece 42 is not a ring, but is described in
Etter as "of substantially triangular configuration." Id. at 9-10 (citing Etter
i-f 53). The Examiner responds that Etter' s "adjusting member ( 40) is being
regarded as the ring, wherein the adjusting member ( 40) comprises a slide
part ( 42) and a sliding bolt ( 41 ), ... wherein the sliding bolt ( 41) has a
circular configuration thereby the adjusting member 40 can be defined as a
ring." Ans. 15 (citing Etter, Fig. 4A). Appellants reply that "sliding bolt 41
has no hole through its center and therefore is not a ring[,] ... is not
mounted on a rod for axially reciprocating sliding movement[,] ... [and
instead] is received in an axial bore 38 of a cylindrical sleeve 37." Reply Br.
8 (citing Etter i-f 53).
Appellants' characterization of Etter' s adjusting member 40 is con-ect.
Etter' s adjusting member 40 is not described in Etter as a ring that slides
axially over a rod, but rather as a bolt received in an axial bore of support
arm 30 and terminating in a triangularly shaped slide piece with converging
sliding surfaces that cooperate with rollers. See Etter i-f 53. The Examiner
also erred in finding that slide piece 42 is a ring.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1, 21, and 26, and claims 15----20, 22----25, and 27----33
depending therefrom, as anticipated by Etter.
DECISION
The Examiner's decision to reject claims 1 and 15-25 under 35 U.S.C.
§ 102(e) as anticipated by Dodge is REVERSED.
8
Appeal2014-003299
Application 12/846,382
The Examiner's decision to reject claims 26-33 under 35 U.S.C.
§ 102(e) as anticipated by Dodge is AFFIRMED.
The Examiner's decision to reject claims 1 and 15-33 under 35 U.S.C.
§ 102(b) as anticipated by Etter is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
9